Friday, 1 November 2013

In search of a technical effect

This is a repost of an article that will shortly be appearing in the October 2013 edition of the CIPA Journal. For anyone who doesn't want to know the score before the issue is published, please look away now. Alternatively, read on for a version in which I have incorporated links to the relevant case law and other material.

Law and practice on what is considered patentable at the UK
and European patent offices has been running along parallel lines for as long
as the EPC has been in existence. While the direction of travel is always
roughly the same, though with occasional diversions, the lines never seem to
converge completely. At the risk of a gross oversimplification, this can be largely
blamed on the difference between the law of precedent as applied in the UK and
at the EPO. On one side, the EPO Boards of Appeal are apparently content to
allow "lines of reasoning" to be developed, and sometimes abandoned, as time goes
on and technology develops (see for example T 1227/05, commented by me here on the IPKat). Law and practice in the UK on the other hand has
followed more of a process of accretion and correction, where previous case law
has tended to act as a restraint on any major changes, although changes at the
boundary can and do sometimes happen.

There have been six Court of Appeal judgments in the area of
patentability under section 1(2)
over the period from 1989 to 2013 (see here for a full list). From these, the law in the UK can be
considered settled in a way that is roughly based on the four step test put
forward by the UK IPO and approved by Jacob LJ in Aerotel/Macrossan
from 2006, with various caveats and fudges applied that try to make the test
stay in line with earlier Court of Appeal judgments as well as being as
consistent as possible with the approach taken at the EPO. To achieve complete
consistency between the UK IPO and EPO from the different approaches is, of course,
impossible. In an ideal world, the same test would be applied regardless of the
office in which an application was being prosecuted, and the same result
obtained, not least because the effect of a patent granted by the UK office is
the same as one granted by the EPO. This ideal world is not, however, going to
appear in the foreseeable future. A change to match the EPO approach in the UK
would require abandonment of not just the Aerotel/Macrossan
test and related Court of Appeal case law, but also the well-established Windsurfing/Pozzolli test for inventive
step. This is because the EPO test for patentability is inextricably linked
with the problem-solution approach for assessing inventive step. Barring a highly
surprising result from the UK Supreme Court, and ignoring the long-term
possibility of the IPO ceasing to grant patents together with UK courts no
longer having jurisdiction over UK patents, this is not going to happen. On the
other side, it is unlikely in the extreme that the EPO Boards of Appeal would
consider abandoning the universally applied problem-solution approach in order
to fit with the different approach taken by only one member state. Since a fundamental
change in approach is unlikely from either side, the best that could reasonably
be hoped for is that outcomes are as closely aligned as possible. As the
Enlarged Board of Appeal stated in G3/08 in relation to the exclusion of computer programs, “a uniform understanding of where to draw the
line between applications relating to programs for computers as such [...]
still cannot be assumed despite considerable convergence in recent court
rulings” (point 4.1 of the reasons). However, despite the discrepancies in
approach and principles, as Lord Neuberger stated in Symbian, there is clearly a strong desire for the two offices to be
“marching together as far as possible”,
and “where there may be a difference of
approach or of principle, one must try to minimise the consequent differences
in terms of the outcome in particular patent cases” (paragraph 61).

Since we can safely assume, at least for the foreseeable
future, that the differences in approach and principle are not going to change
substantially, the question becomes: how do we ensure that the outcomes are as
closely aligned as possible? Now that the heat and antagonism arising from Jacob
LJ’s judgment in Aerotel/Macrossan,
which claimed that the EPO Boards of Appeal decisions were mutually
contradictory, and the resulting response from Herr Steinbrener in T 154/04 accusing the Court of Appeal
of missing the point, has dissipated, others have attempted to patch up any
differences by using more common language that can be applied to both
approaches. A common theme is the unfortunate but seemingly inevitable use of
the word “technical”, in particular in the form of tests and checks for whether
an invention provides a “technical effect”. Even though no-one has been able to
provide a stable definition for what the word “technical” actually means in the
context of patentability, this does not seem to matter because decisions from
both sides are building up regarding what can and cannot provide a technical
effect, while all decisions carefully avoid providing a definition of the exact
boundary outside of which there would be no such effect.

In the UK, following the Court of Appeal judgments in Symbian and Aerotel, an attempt was made by Lewison J (as he then was) in Re AT&T Knowledge Ventures LP [2009]
EWHC 343 (Pat) to summarise, in the form of a series of useful “signposts”, what
aspects of an invention might point towards a relevant technical effect. These
signposts are:

i) whether
the claimed technical effect has a technical effect on a process which is
carried on outside the computer;

ii) whether the claimed technical effect operates at the
level of the architecture of the computer; that is to say whether the effect is
produced irrespective of the data being processed or the applications being
run;

iii) whether the claimed technical effect results in the
computer being made to operate in a new way;

iv) whether there is an increase in the speed or reliability
of the computer;

v) whether
the perceived problem is overcome by the claimed invention as opposed to merely
being circumvented.

One benefit of these signposts is that there is no need for
the word “technical”; the signposts make just as much sense without it. Hearing
officers at the IPO seem to like the signposts, and have used them in
practically every decision since AT&T,
although in the vast majority of cases to show that a claimed invention does not
in fact demonstrate any technical effect. The Court of Appeal, in HTC Europe Co Ltd v Apple Inc [2013]
EWCA Civ 451 (see here for my comments) has indicated that these are “useful
signposts, forming as they do part of the essential reasoning in many of the
decisions to which we must look for guidance. But that does not mean to say
they will be determinative in every case”, but considered that the fourth
was too narrowly put, which should instead ask “whether the computer is a better computer in the sense of running more
efficiently and effectively as a computer” (paragraph 51 of Kitchin LJ’s
judgment). This has been recently confirmed in Lantana Ltd’s Application [2013] EWHC 2673 (Pat), where Birss J has
simply rewritten the signposts as modified by HTC v Apple.

Although the signposts, which are now firmly established in
UK practice, are useful pointers towards what might be patentable, they are
non-exhaustive and do not necessarily apply in every case. As Lewison J put it
in AT&T, “it is still necessary to consider whether the claimed technical effect
lies solely in excluded matter” (paragraph 41). This caveat leaves plenty
of room for hearing officers and judges to conclude that an invention would
still be excluded from patentability. In practice though there have been no
decisions from the IPO where one of the signposts has pointed towards a
technical effect but where the hearing officer has nevertheless still considered
the invention to be excluded. The possibility therefore remains open, but it seems
unlikely to be used in practice.

One of the main problems with aligning the UK approach to
patentability with that of the EPO’s is that an assessment of patentability is
typically made, according to the Aerotel
test, without any real consideration of the prior art. The contribution (step
two) is often assessed without looking at where the claimed invention differs
from the closest prior art, and sometimes even without a search having been
carried out. In some cases an assessment of novelty and inventive step is
carried out by the examiner, and the issue of patentability is the only issue
remaining to be resolved. In most cases, however, there is no real assessment
of novelty and inventive step and patentability is the sole issue in question.
This approach is completely at odds with that taken at the EPO, where the
assessment of patentability is deliberately intertwined with that of inventive
step through use of the problem-solution approach. This approach requires the
closest prior art to be established, which in some business method cases might
be simply a ‘general purpose computer’ (requiring no actual search to be
carried out). The difference over this prior art is then established, and what
technical effect this difference has. The objective technical problem is
derived from the effect, and finally a judgment made as to whether the skilled
person would find the difference to be obvious. The assessment of patentability
is incorporated in the steps of assessing what the technical effect is. In line
with the leading case on the subject, T 641/00, any differences that are not considered to be technical are moved
into the problem to be solved, rather than considered as being part of the
solution. In this way, any non-technical aspects are considered not to
contribute to the technical character of the invention. As stated in T 641/00,
“the problem must be a technical problem,
it must actually be solved by the solution claimed, all the features in the
claim should contribute to the solution, and the problem must be one that the
skilled person in the particular technical field might be asked to solve at the
priority date” (point 5 of the reasons), and “an invention in the sense of Article 52 EPC can only be made up of
those features which contribute to said technical character” (point 6).

A recent decision from the EPO Boards of Appeal, T 1670/07 (commented on by the IPKat here), has reviewed in more detail
what would be considered to be technical. As with T 641/00 (which, strangely, was not cited in the decision), the consideration
at the EPO is largely a negative one, i.e. there are certain aspects that are
considered not to be technical. Based on this decision, which related to patentability
of a method of facilitating shopping using a mobile device, selecting multiple
vendors for a shopping order and provision of a shopping itinerary based on a
user profile are both considered to be not technical. The Board also considered
that there were certain ‘fallacies’ in the arguments presented for a technical
effect, which in essence claimed that non-technical aspects could in some
circumstances contribute to the technical character of an invention. The Board
considered that they could not.

How then, in practice, do these different approaches to patentability
work, and do they result in decisions where one would favour patentability for
particular types of inventions over the other? The answer appears to be in looking
at how a technical effect is defined, rather than the overall approach to be
followed. Consideration of a technical effect is now at least common to both
approaches, even if it is used at different steps in the process. There is also
a degree of convergence in what would be considered to be a technical effect, even
though the way to assess what such an effect might be is a positive one in the
UK (i.e. deciding whether the effect can be found from a list) and a negative
one at the EPO (i.e. whether the claimed technical effect is one that has been
previously decided not to be technical). In the end though, if there is a
technical effect according to the UK approach, there will always be at least an
arguable case for the effect to contribute to the technical character of the
invention according to the EPO approach. Decisions may vary according to the
facts of particular cases, and to how well arguments are made but in general, despite the differences in approach, the good news at the moment is that there
should be no significant difference in result.

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About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.